The Madrid Agreement Provisional Refusal

The Madrid Agreement requires distinct information to be furnished on the application for international trademark registration. Applications must be completed in full, as well as provide for all the necessary information, or otherwise are deemed as incomplete.

The international trademark registration application is allotted a two month term in order to be appropriately completed, and all necessary information is to be submitted by within that time period. A notice of provisional refusal may be communicated by the International Bureau to the domestic Office, where it will provide for the grounds of the international trademark registration dismissal and cancellation. However, in most cases, it will be the domestic Office issuing the actual notices of provisional refusal to the applicant as authorized by the International Bureau.

In extenuating circumstances, the domestic Office will move toward a provisional refusal because the application process or registration requirements are not met as per the domestic Office and not necessarily the International Bureau or Madrid Agreement regulations. This type of refusal is referred to in the legislation as ex officio. Provisional refusals may also be issued in cases of opposition against the mark's trademark registration on the international level. In the case of an ex officio provisional refusal, the Office making the decision must report back to the International Bureau regarding the status of protection of that particular trademark.

The Office must send the notice of provisional refusal within the applicable time limit as found in the Madrid Agreement. The International Bureau will then publish in the WIPO Gazette of International Marks provisional refusals of certain marks, only indicating whether the refusal in total or partial, but not indicating goods or products directly affected nor the actual grounds for such refusal. The International Bureau may choose the publish the categories of products or goods that are related to mark that are directly affected by the decision. The domestic Office must send a statement and report of all the proceedings regarding the protection status of the mark in question, such as decisions rendered by a national appeal board or court law.

Most importantly, it shall also report the final outcome of such proceedings, rendering the protection of the mark refused for all the goods and/products or services, or otherwise granted protection. The International Bureau will ultimately publish the results of approval or refusal, with an indication of the affected products, goods, or services.

The notification of provisional refusal must provide for certain content as outlined in the Madrid Agreement which includes the following:

The name of the Office making the notification of provisional refusal

The international trademark registration number

Written descriptions of the actual mark in question

This may also include the basic or domestic registration number for identification purposes

The grounds on which the provisional refusal are based upon, such as ex officio or opposition

Reference to the legislation as found in the Madrid Agreement that are associated with the grounds of refusal

If the provisional refusal is based on opposition:

Filing date for international registration of the other mark

International trademark registration of the other mark

Priority date

Registration date and number of the other mark

Name and address of the other mark's owner

A reproduction of the other mark

A list of products or goods related or associated with the other mark

The products or goods directly affected or not affected by the provisional refusal <

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